15/10/2012

DE - Agfa v. Papier Union

AgfaGraphics N.V. v Chengdu Xinggraphics Co.Ltd; German Federal Supreme Court, Germany, 14 August 2012, Case No. X ZR 3 /10, with thanks to Julia Bödeker and Christoph de Coster, TaylorWessing, for sending in the judgment and a head note in English

In the above judgement, the German Federal Supreme Court made its final ruling in the long pending dispute between Agfa Graphics N.V. and Chendgdu Xingraphics Co.Ltd. concerning a key patent on lithographic printing plates. The German Federal Supreme Court overruled the decision of the Federal Patent Court and fully re-established the patent as granted. The dispute is accompanied by infringement actions filed by Agfa in Germany and the Netherlands. The EPLAW Patent Blog published a previous decision from the Netherlands here.

The Court ruled on the priority claimed by a Art 54 III EPC application. The Court made a distinction between the novelty test and the priority test, emphasizing that examples that inherently disclose a certain element of a technical teaching (in this case UV-insensitivity) might anticipate that teaching, but do not necessarily establish the basis for claiming priority. Such a priority claim does not only require that the element is specifically disclosed in the previous application, but further that it is disclosed as being part of the invention (Art. 88 IV EPC). According to the court there is no direct and unambiguous disclosure of the whole technical teaching in the priority document if examples are described that inherently disclose all elements of the technical teaching but do not enable the person skilled in the art to make a purposeful selection between examples featuring all elements of the technical teaching and examples not featuring all of them.